Intellectual property | Buddle Findlay

Overview

Our intellectual property team offers clients a full range of intellectual property services based on wide experience gained at international law firms, patent attorney firms, and in public sector policy and industry roles.

We act for a wide range of public and private sector clients on intellectual property related issues, including patent and brand protection, in New Zealand and overseas.

Our national intellectual property team is led by partner Hamish Selby and senior practitioner Sophie Thoreau (special counsel). With harmonisation of Australian and New Zealand intellectual property laws opening the two markets to practitioners from both countries, the team regularly files and prosecutes trade mark and design applications directly in Australia and New Zealand.

The team files directly in a number of Pacific Island nations and has a network of experienced trade mark agents and other intellectual property practitioners around the world which it uses to help protect clients' brands and other intellectual property elsewhere.

Given the multitude of copyright issues in the intellectual property area, all our practitioners are experienced in copyright law. We also offer patent advisory and dispute services. We help select and brief appropriate patent attorneys for patent registry matters.

We provide intellectual property establishment, registration, management and transactional services and complement this by offering a full range of dispute resolution services, including litigation.

Our services include creating trade marks and clearing trade marks and designs for use and registration, registering trade marks and designs, preventing registration and getting trade marks and designs off registers, managing trade mark and design portfolios, including trade mark watching services and renewals, documenting and recording intellectual property transfers such as assignments and licences, dealing with securities over intellectual property, strategic intellectual property advice including due diligence and intellectual property registration programmes, unregistered trade mark protection (passing off and the Fair Trading Act), domain name registration and domain name disputes, advertising standards complaints and broadcasting standards complaints, patent advisory, dispute resolution and litigation, copyright, transactional support (financing and structuring, licensing, franchising, and research and development), anti-counterfeiting and dispute resolution, including registered and unregistered trade mark, patent and copyright litigation.

Market recognition

"Housing one of the largest trademark practices, Buddle Findlay is, year on year, the top trademark filer among commercial law firms. Its wide range of clientele across an expansive breadth of industries showcases the group’s immense tenacity and expertise. Its enviably high success rate in domain name and IP disputes also remains unparalleled." - World Trademark Review

“The team at Buddle Findlay has been nothing shy of professional, knowledgeable, pragmatic and commercially minded. They also think outside of the box and are problem solvers.” - World Trademark Review

Buddle Findlay is widely recognised for its work on IP aspects of significant transactional work and portfolio management. It has extensive experience acting for startups and is particularly adept in brand protection and IP enforcement. - Chambers Asia-Pacific

New Zealand Trademark Firm of the Year - 2024 Asia IP Awards

Managing IP Asia-Pacific 2023 Awards - Shortlisted for New Zealand Firm of the Year

Member of International Trademark Association (INTA)

Member of Asian Patent Attorneys Association (APAA)

Member of Intellectual Property Society of Australia and New Zealand (IPSANZ)

Experience

Sector/Expertise

Work highlights

Advising Nestlé Health Science

on the acquisition of The Better Health Company (which includes the brands GO Healthy and Egmont Honey)

Advising NZX

listed Good Spirits Hospitality on the acquisition of Nourish Group

Acting for UMF Honey Association

in successful legal proceedings for enforcement of unregistered trade mark rights in the term UNIQUE MANUKA FACTOR for manuka honey

Hamish Selby - Conducting IP due diligence

in connection with the sale and purchase of businesses, including most recently the sale of New Zealand's largest coffee business and the purchase of a large Australasian manufacturing business

Acting for Freightways Express

in successful legal proceedings for enforcement of registered trade mark rights in relation to the PARCELINE trade mark for courier services

Intellectual property - Acting for Alibaba Group in connection with its New Zealand trade mark portfolio

in connection with its New Zealand trade mark portfolio, which includes clearing marks for use, registering them and managing these rights and enforcing them against third parties

Intellectual property - Assisting Enable New Zealand to acquire and transfer IP assets in light of national restructure

to acquire and transfer IP assets in light of national restructure of the entire medical and hospital sector by the New Zealand Government

Acting for Ngāi Tahu Tourism

in successful legal proceedings for enforcement of unregistered trade mark rights in red-coloured jet boats

Trade mark portfolio management services

for British American Tobacco, Colgate-Palmolive, Yahoo!, Auckland Council, University of Auckland, Freightways Group, Te Runanga o Ngāi Tahu, Ngāi Tahu Tourism, UMF Honey Association, Mr Apple, JUCY, Green Cross Health, Vend, Abano Healthcare, Daiken New Zealand, Stonewood Homes, Saint Clair Family Estate Wines, Rod McDonald Wines and others

Providing anti-counterfeiting advice and strategies

including filing and maintaining Customs' notices and direct action against unauthorised importers and sellers

Advising Suntory

on the intellectual property aspects of the competitive bid for and purchase of the Frucor beverage business, including the “V” and “MIZONE” brands, from Danone, including reviewing Frucor’s extensive domestic and international trade mark portfolio

Advising clients

on brand creation and trade mark clearance

Advising clients

on labelling, advertising and promotional compliance

Advising clients

on domain names and domain name disputes, including cybersquatting and anti-typosquatting

Providing clients

with copyright, design and patent advisory and dispute services

Acting for Steelbro New Zealand

in patent and copyright infringement proceedings

Performing due diligence and technology transfer

Advising clients

on intellectual property policy

Advising clients

on the intellectual property aspects of employment relationships

Our team